USPTO Patents Application 09352734

United States Rvtent and Trademark OmcE

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Addres«: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1430
www.ufpto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/352,734

07/13/1999

JAMES OWEN

SLAG 193

2607

7590 08/26/2003

MARGER JOHNSON & McCOLLOM, P.C.
1030 S.W. MORRISON STREET
PORTLAND, OR 97205

EXAMINER

DANG, DUY M

ART UNIT

PAPER NUMBER

2621

DATE MAILED: 08/26/2003

1^

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 07-01)

Office Action Summary

Application No.

09/352,734

Examiner

Duy M Dang

Applicant(s)

OWEN ET AL

Art Unit

2621

The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above Is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS fram the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
eamed patent term adjustment. See 37 CFR 1 .704(b).

Status

1 )S Responsive to connnnunication(s) filed on 6/5/03 .
2a)S This action is FINAL. 2b)n This action is non-final.

3) n Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.
Disposition of Claims

4) ^ Claim(s) 7-9 and 11-15 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) n Claim(s) is/are allowed.

6) IEI Claim(s) 1-9 and 11-15 is/are rejected.
?)□ Claim(s) is/are objected to.

8) n Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) 0 The specification is objected to by the Examiner.

10) 0 The drawing{s) filed on is/are: a)n accepted or b)^ objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

11) S The proposed drawing correction filed on 06 August 2002 is: a)K approved b)n disapproved by the Examiner.

If approved, corrected drawings are required in reply to this Office action.

12) 0 The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§119 and 120

13) 0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).

a)nAII b)n Some*c)n None of:

1 .□ Certified copies of the priority documents have been received.

2. n Certified copies of the priority documents have been received in Application No. .

3. n Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

14) n Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 1 19(e) (to a provisional application).

a) □ The translation of the foreign language provisional application has been received.

15) n Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
Attachment(s)

1) D Notice of References Cited (PTO-892)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) □ Information Disclosure Statement(s) (PTO-1449) Paper No(s) .

4) Q Interview Summary (PTO-413) Paper No(s).

5) □ Notice of Infonnal Patent Application (PTO-152)

6) n Other:

U.S. Patent and Trademartt Office
PTO-326 (Rev. 04-01)

Office Action Summary

Part of Paper No. 12

Application/Control Number: 09/352,734
Art Unit : 2 621

Page 2

DETAILED ACTION

1. Applicant's amendment filed 6/5/03 has been entered and
made of record.

2. Claims 1-9 and 11-15 are currently pending,

3. The following is a quotation of the appropriate paragraphs
of 35 U.S.C. 102 that form the basis for the rejections under
this section made in this Office action:

A person shall be entitled to a patent unless -

(b) the invention was patented or described in a printed publication in this or
a foreign country or in public use or on sale in this country, more than one
year prior to the date of application for patent in the United States.

4. Claims 1-9 and 11-15 are rejected under 35 U.S.C, 102(b) as
being anticipated by Schmid et al . (US Patent No. 5,659,164. Art
of record IDS (paper #2) filed 10/18/1999) .

Regarding claim 1, Schmid teaches a method for controlling
scanning device using control sheets (i.e., the "MRI such as the
bar-coded information" shown in figure 1 and mentioned in col. 4
lines 22-28 functions as the so called "controlling scanning
device using control sheets"), comprising the steps of:

starting an imaging job having a multiple sheets (i.e., the
"start scanner" shown at 14 of figure 3A; "place stack in
feeder" shown in figure 2A; and "preparing a stack of successive
sheets .. .digitizing scanner" mentioned in col. 3 lines 34-41.
Also refer to "beginning of the document scanning" mentioned in

Application/Control Number: 09/352,734 Page 3

Art Unit: 2621

col. 3 lines 42-43), wherein at least one sheet is a control
sheet (see "cover page 1" shown in figure 1) ;

locating (i.e., the "place documents with cover sheets on
scanner feeder" shown at 6 of figure 3A. Also refer to
"recognizing. . .reading the machine -readable code markings of the
cover sheet" mentioned in col. 3 lines 41-44) a control image on
the control sheet within said imaging job (i.e., the "MRI" and
"MRI (machine readable information) " included in the "cover page
1" as shown in figure 1 and mentioned in col. 4 line 22-28
function as the so called "a control image") wherein the control
sheet could be located anywhere within the imaging job (see
"cover page 1" shown in figure 1) ;

processing (i.e., the "analyze, recognize" shown at 20 of
figure 3B. Also refer to "computer (CP)" shown in figure 2A and
mentioned at col. 4 lines 32-37) control instructions (i.e., the
"machine code" shown at 2 0 of figure 3B) from said control image
(i.e., the "machine code" shown at 20 of figure 3B and the "MRI"
mentioned in col. 4 lines 22-28 correspond to the so called
"control instructions"); and

creating output in accordance with said control
instructions (i.e., the "recording cover sheet info routing ID,
config. parameter, etc." shown at 24 of figure 3B) .

Application/Control Nurnber: 09/352,734 Page 4

Art Unit: 2 621

Regarding claim 8, Schmid teaches a method for controlling
scanning device using control sheets (i.e., the "MRI such as the
bar-coded information" shown in figure and mentioned in col. 4
lines 22-28 functions as the so called ''controlling scanning
device using control sheets"), comprising the step of:

starting an imaging job having multiple sheets (i.e., the
"start scanner" shown at 14 of figure 3A; "place stack in
feeder" shown in figure 2A; and "preparing a stack of successive
sheets ... digitizing scanner" mentioned in col. 3 lines 34-41.
Also refer to "beginning of the document scanning" mentioned in
col. 3 lines 42-43), wherein at least one sheet is a control
sheet (see "cover page 1" shown in figure 1) ;

locating (i.e., the "place documents with cover sheets on
scanner feeder" shown at 6 of figure 3A. Also refer to
"recognizing. .. reading the machine -readable code markings of the
cover sheet" mentioned in col. 3 lines 41-44) a control image on
the control sheet within said imaging job (i.e., the "MRI" and
"MRI (machine readable information) " included in the "cover page
1" as shown in figure 1 and mentioned in col. 4 line 22-28
function as the so called "a control image") wherein the control
sheet could be located anywhere within the imaging job (note the
location of the "MRI" on the cover sheet 1 according to figure 1

Application/Control Number: 09/352,734 Page 5

Art Unit: 2 621

and the location of the "barcode" mentioned in col. 5 lines 60-
63. Also refer to the "cover page 1" shown in figure 1) ;

creating output for said imaging job (i.e., the "recording
cover sheet info routing ID, config. parameter, etc." shown at
24 of figure 3B) ; and

processing (i.e., the "analyze, recognize" shown at 20 of
figure 3B) control instructions (i.e., the "machine code" shown
at 20 of figure 3B) from said control image and using said
control instruction for managing said output (i.e., the "set
scanner parameters command: resolution, dither, mode, etc."
shown at 23 of figure 3B) .

Regarding claims 2, and 9, Schmid further teaches an image
acquisition task (i.e., the "scanner" shown in figure 2C and
mentioned in col. 3 lines 39-41 functions as the so called "an
image acquisition task").

Regarding claims 3, and 11, Schmid further an image
production task (i.e., the scanning document and storing
document as a digitized document mentioned in col. 5 lines 35-38
functions as the so called "an image production task") .

Regarding claims 4, and 12, Schmid further teaches a
machine -readable format (i.e., the stack of pages shown in
figure 1 contained printed information according to col. 2 lines
23-27 satisfies the so called "a machine -readable format").

Application/Control Number: 09/352,734 Page 6

Art} Unit: 2 621

Regarding claims 5, and 13, Schmid further teaches wherein
said control image is text (i.e., the "human readable
information (HRI) " shown in figure 1, and "printed information"
(i.e., handwritten) mentioned in col. 2 lines 23-28).

Regarding claims 6, and 14, Schmid further teaches wherein
said control image is numbers (i.e., the "human readable
information (HRI)" shown in figure 1, "MRI" shown in figure 4
(note the numbers printed below barcode) , and "printed
information" (i.e., handwritten) mentioned in col. 2 lines 23-28
satisfy the so called "numbers") .

Regarding claims 7, and 15 Schmid further teaches wherein
said method includes the steps, of locating a second control
image on the second control sheet (see figure 3A, item 12:
append new documents cover sheets and place entire stack on the
feeder. Note the "MRI" included in the this stack having new
document cover sheet corresponds to the so called "second
control image on the second control sheet" . Also refer to
"cover page 1'" shown in figure 1) and processing that control
image (i.e., the "analyze, recognize machine code" shown at 20
of figure 3B) .

5. Applicant's arguments filed 2/11/03 have been fully
considered but they are not persuasive.

Application/Control Number: 09/352,734

Page 7

Art2 Unit: 2621

In reply to applicant's remarks with regard to claims 1 and
8 that Schmid does not teach the features of: (1) "at least one
sheet in the imaging job is a control sheet" and (2) "the control
sheet can be located any where in the imaging job", the examiner
disagrees. With regard to (1) , Schmid clearly teaches these
features. For example, the "cover page" (i.e., cover page 1 and
cover page 1' shown in figure 1) includes "MRI" which is a bar-
coded information. settings for the scanner S." as mentioned in
col. 4 lines 22-2 8. Thus, Schmid' s cover page corresponds to
the so called "control sheet" . In addition, Schmid does teach
two cover pages (i.e., figure 1) which also meet the so called
"at least one control sheets" as well. With regard to (2), the
"cover pages" in Schmid are located at "cover page 1" and "cover
page 1'" according to figure 1. Since the so called "located
anywhere" is so broad and satisfied by the location of the cover
pages in Schmid.

In reply to Applicant's remarks with regard to claims 2-3,
9, and 11 that Schmid can not teach that (1) "wherein the imaging
job is an image acquisition task" and (2) "wherein the imaging
job is an image production task", the examiner does not agree.
With regard to (1), Schmid does teach these features. For
example, the "digital scanning of documents comprising a
plurality or stack of sheets or pages containing printed

4 •

Application/Control Number: 09/352,734 Page 8

Arts Unit: 2621

information" mentioned in col. 1 lines 11-13, and '^feeding the
cover sheet (s) and the stack of sheets into a digitizing
scanner. . .beginning of the document scanning ... routing
information thereof" mentioned in col. 3 lines 41-45 satisfy the
so called "imaging job is an image acquisition task". With
regard to (2), Schmid does teach these features. For examples,
"to scan a stack of sheets or pages and covert them to digitized
images. This set of image page can then be viewed on a computer
display" mentioned in col. 1 lines 42-44 clearly satisfies the
so called "imaging job is an image production task".

In reply to Applicant's remarks with regard to claims 4-5,
and 12-13, the examiner disagrees because Schmid does teach
these features as clearly pointed in the claim rejection above.
For example, Schmid does teach control image being located on a
control sheet (see "MRI" included in "cover page" as shown in
figure 1) , where the control sheet is located any where in the
imaging job (see rejection as applied to claim 1 above) , control
image be machine -readable code or text (see "MRI" shown in
figure 1 and mentioned in col. 4 lines 22-28) .

6. THIS ACTION IS MADE FINAL. Applicant is reminded of the
extension of time policy as set forth in 37 CFR 1.136(a).

A shortened statutory period for reply to this final action
is set to expire THREE MONTHS from the mailing date of this

Application/Control Number: 09/352,734 p^gg 9

Art Unit: 2621

action. In the event a first reply is filed within TWO MONTHS
of the mailing date of this final action and the advisory action
is not mailed until after the end of the THREE-MONTH shortened
statutory period, then the shortened statutory period will
expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1.136(a) will be calculated
from the mailing date of the advisory action. In no event,
however, will the statutory period for reply expire later than
SIX MONTHS from the mailing date of this final action.
7. Any inquiry concerning this communication or earlier
communications from the examiner should be directed to Duy M
Dang whose telephone number is 703-305-1464. The examiner can
normally be reached on Monday to Thursday from 6:30AM to 5:00PM.

If attempts to reach the examiner by telephone are
unsuccessful, the examiner's supervisor, Leo H Boudreau can be
reached on 703-305-4706. The fax phone numbers for the
organization where this application or proceeding is assigned
are 703-872-9314 all communications.

Any inquiry of a general nature or relating to. the status
of this application or proceeding should be directed to the
receptionist whose telephone number is 703-306-0377

dmd

8/18/03

LEO BOUDREAU
SUPERVISORV PATENT EXAMINER
TECHNOlUCy U&yirER 2600